Ex Parte ODOM et al

Patent Trial and Appeal Board

Aug 7, 2018

13007475 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/007,475 01/14/2011 JAMES MICHAEL ODOM
27076 7590 08/09/2018
DORSEY & WHITNEY LLP - Seattle
INTELLECTUAL PROPERTY DEPARTMENT
Columbia Center
701 Fifth Avenue, Suite 6100
SEATTLE, WA 98104-7043
UNITED ST A TES OF AMERICA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P215570.US.D7 6783
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/09/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket-se@dorsey.com
seattle.ip@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MICHAEL ODOM and SCOTT D. YELICH
Appeal2017-004190 1
Application 13/007,475
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 2, 5-12, and 14--
25. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to the exchange of goods and services
via a networked electronic market. Spec. 1, lines 13-15.
Claim 1 is the sole independent claim on appeal:
1. A method for operating an electronic, networked
exchange system, the method comprising:
1 The Appellants identify MINERAL LASSEN LLC as the real party in
interest. Appeal Br. 3.
Appeal2017-004190
Application 13/007,475
receiving from a seller, information for generating a
commodity listing, using an external exchange
provider portion of the electronic, networked
exchange system, wherein the received information
includes information identifying a commodity to be
traded within the electronic, networked exchange
system and information identifying at least one
mode of operation for trading the commodity
compnsmg:
a start time for trading the commodity;
a stop time for trading the commodity;
rules of public access; and
an intervening capability of the seller to
terminate trading of the commodity;
generating, using the external exchange provider portion,
the commodity listing based on the received
information;
providing, using the external exchange provider portion, a
purchaser computerized access to a graphical
representation of the commodity listing on the
electronic, networked exchange system;
processing, using an internal exchange provider portion of
the electronic, networked exchange system,
information received from the external exchange
provider portion representing a negotiation
regarding the commodity between the seller and the
purchaser that is conducted using the electronic,
networked exchange system, the internal exchange
provider portion separated from the external
exchange provider portion by a security means; and
determining, using the internal exchange provider portion,
whether said negotiation between the seller and the
purchaser is concluded.
The Examiner rejected claims 1, 2, 5-12, and 14--25 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of abstract ideas.
We REVERSE.
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Application 13/007,475
ANALYSIS
The Appellants argue the claims recite "something more" that
transforms the abstract idea to which the claims are directed into eligible
subject matter, because, according to the Appellants, the "instant claims are
relevant to a technical improvements to the operation of electronic,
networked exchange systems to overcome problems arising from the realm
of computing and networked systems." Appeal Br. 6. The improvement in
claim 1, according to the Appellants, is a "security means" that solves
"technical problems of unauthorized access to portions of a server and
unwanted information from entering an exchange." Id. 6-7; see also Reply
Br. 2-3.
The Examiner finds the "internal exchange provider portion separated
from the external exchange provider portion by a security means," as
claimed, comprises elements that "together execute in routinely and
conventionally accepted coordinated manners and interact with their partner
elements to achieve an overall outcome which, similarly, is merely the
combined and coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities previously
known to the industry." Final Act. 5.
The Specification describes that the "concept of using the Internet as
a marketplace or auction forum is not particularly unique or difficult of an
endeavor," and that"[ c ]ommerce systems over the Internet are known in the
art. Most of these systems operate on a post and match process; that is, the
systems work by having a prospective buyer bid on an item, and if the bid
matches the seller's specified selling price, the item is sold to the buyer."
Spec. 2, lines 15-27. The portion of the claim that corresponds to an
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Application 13/007,475
electronic trading system, therefore, is admitted by the Appellants to be
conventional.
The Specification also describes that "the general architecture used is
a client/server architecture. Client/server architectures, per se, are generally
known." Spec. 6, lines 3--4. The portion of the claim that corresponds to
the server function being distributed across an "external exchange provider
portion" and an "internal exchange provider portion" is, thus, admitted by
the Appellants to be conventional.
We construe the claimed "security means," as a means for providing
security by separating the internal and external portions of the exchange
system, under 35 U.S.C. § 112, sixth paragraph. This construction is based
on the Specification, which describes that "[i]nternal portion 101 may be
separated by security means 102 from external portion 103. Security means
102 may be a firewall or similar security providing device to prevent
unauthorized access to certain portions of the server side component." Spec.
6, lines 13-15. We, thus, further construe "security means" as limited to a
firewall or similar security-providing device.
In response to the Examiner's finding, the Appellants do not dispute,
or provide evidence showing that firewalls and similar security-providing
devices are outside the realm of well-understood, routine, and conventional
devices in a computer network. Therefore, the remaining issue, looking at
the claims as an ordered set of steps and as a whole, is whether placing a
firewall or similar security-providing device in between two servers within
an exchange system is well-understood, routine, and conventional for
separating those two servers. See Appellants' Figure 1, element 102. Such
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Application 13/007,475
an analysis is a factual determination. See Berkheimer v. HP Inc., 881 F .3d
1360, 1369 (Fed. Cir. 2018):
Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination. Whether a particular technology is well-
understood, routine, and conventional goes beyond what was
simply known in the prior art. The mere fact that something is
disclosed in a piece of prior art, for example, does not mean it
was well-understood, routine, and conventional.
Here, the Examiner has not provided any evidence that separating two
servers with a firewall or similar security-providing device is disclosed in
well-understood, routine, and conventional, in either treatises or prior art.
Figure 1 of Fisher et al. (US 6,243,691 Bl), cited by the Examiner as
evidence that a "security means" is well-known, for example, does not
disclose a firewall or security-providing device at all, and only displays
a single server. See Answer 5. Instead, the Examiner asserts that the
"[ s ]eparation of servers by security means, software agents to search based
on a set of parameters, filtering content and routing by computers have been
in existence before the priority date of the Appellant's invention."
Answer 9.
However, even if the Examiner had shown that Fisher is evidence that
separation of servers by a firewall or similar security-providing device was
"in existence," this does not meet the evidentiary burden placed on the
Examiner as to whether the practice is well-understood, routine, and
conventional, by Berkheimer, which instructs that "[t]he mere fact that
something is disclosed in a piece of prior art, for example, does not mean it
was well-understood, routine, and conventional." 881 F.3d at 1369.
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Application 13/007,475
Because the record does not provide us with sufficient evidence as to
whether separating two servers with a firewall or similar security-providing
device was well-understood, routine, and conventional in the art, we cannot
sustain the Examiner's rejection of claims 1, 2, 5-12, and 14--25 under
35 U.S.C. § 101.
DECISION
We REVERSE the rejection of claims under 35 U.S.C. § 101.
REVERSED
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